Relying On Foreign Applications and Registrations For U.S. Trademark Applications

A frequently asked question in my practice is what filing basis should our company rely on in applying for a U.S. trademark application. As many readers may know there are multiple filing bases and to learn more about the basic information for each filing basis, please review our web page entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application. This post will delve into some of the more technical requirements for applicants relying on a foreign application or a foreign registration for a U.S. trademark filing. Please consult with trademark counsel if you plan to file under Section 44 of the Trademark Act, 15 U.S.C. §1126, as there are many nuances an applicant should understand before determining the appropriate basis for filing your U.S. trademark application.

For example, if an applicant wants to file based on Section 44(d) relying on priority of a foreign trademark application, the following requirements must be met:

(1) the applicant must have a country of origin (defined as “the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national.) that is a party to an international treaty or agreement with the U.S. that extends a right of priority or must extend reciprocal rights to nationals of the U.S. (See the TMEP Appendix B for qualifying treaties and Agreements); and

(2) the foreign application which is the basis of the priority claim must be filed in a country that is a party to an international treaty or agreement with the U.S. that extends a right of priority or must extend reciprocal rights to nationals of the U.S., but the application does not have to be filed in the applicant’s country of origin (as long as the applicant alleges either 1(a) or 1(b) as a basis for registration) UNLESS the applicant plans on relying on 44(e) for a basis for registration; and

(3) the applicant must file a claim of priority (file its U.S. application) within six months of the filing date of the FIRST filed foreign application (See TMEP 1003.01); and

(4) the goods and services (scope of the identification) of the U.S. trademark application cannot exceed the goods and services of the foreign filed application; and

(5) the applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce as of the U.S. application filing date.

An applicant filing under Section 44(d) will be asked in the TEAS application form if the applicant intends to rely on Section 44(e) as a basis for registration. If the applicant indicates that it will rely on §44(e), then the Examining Attorney will request the applicant submit a “true copy” of the foreign registration when it becomes available or the Examining Attorney may suspend the application while awaiting receipt of the foreign application. Thereafter, the Examining Attorney will issue inquiries via an Office Action, and the applicant will have six months to respond. If the applicant does not respond, the trademark application will be abandoned for failure to respond to an Office Action.

An applicant may have multiple filing bases for a U.S. trademark application. For an applicant filing under Section 44(d), it may make sense for the applicant to also indicate a 1(b) filing basis in case there is a problem with the issuance of the foreign registration assuming that the applicant will be able to prove use in commerce. Keep in mind, if an applicant chooses to only file under Section 44(e), the foreign registration must have issued by the time of the U.S. application filing, and the foreign registration must be in force and valid at the time the U.S. issues the registration based on that foreign registration.

In addition, a U.S. application can be based on more than one foreign application or more than one foreign registration if the applicant meets the requirements of Section 44(d) and/or Section 44(e). If the foreign application is abandoned during the foreign prosecution, then the U.S. applicant who filed under Section 44(d) and planned to rely on Section 44(e) can amend the application to rely on another filing basis. If this same applicant met the filing requirements of 44(d) on the filing date, the applicant can retain the priority date. See 37 C.F.R. §2.35(b)(4). This is because the USPTO assumes that there was a continued valid basis since there was a statement of a bona fide intent to use the mark in commerce.

Lastly, Section 44 applicants may register on the Supplemental Register. Should a Section 44 applicant need to amend from the Principal to the Supplemental Register, no Allegation of Use or Statement of Use is required. This differs from the intent-to-use applicant who wishes to amend to the Supplemental Register, since the intent-to-use applicant can only do so after it begins use of the mark in commerce and files an Allegation of Use. In that case, the intent-to-use applicant’s filing date changes to the filing date of the Allegation of Use. This can present a priority problem under certain circumstances. A Section 44 applicant will not be susceptible to this issue since use in commerce is not required before registration. There certainly are benefits to qualifying to file under Sections 44(d) or 44(e), but there are a multitude of nuances to be aware of before filing the application. If you have questions pertaining to which filing basis to assert in your U.S. trademark application, do not hesitate to contact the firm for a courtesy consultation.

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